IBO Reviews Recent Patent Litigation


US federal appeals courts have ruled on two long running patent infringement cases involving Applied Biosystems and Waters. Last fall, the US District Court of Appeals for the Federal Circuit ruled on appeals brought by Cohesive Technologies (now Thermo Fisher Scientific) and Waters related to Cohesive’s 1998 suit against Waters (see IBO 12/15/98). In 2001, a jury in the US District Court for District of Massachusetts found that Waters’s 30 µm Oasis HPLC columns infringed Cohesive’s US Patent No. 5,772,874 (see IBO 11/30/01). Six years later, the court awarded sales and royalty damages of $52,800 and prejudgment interest to Cohesive. At that time, the judge also ruled on two other actions brought by Cohesive, finding that the columns also infringed Cohesive’s US Patent No. 5,919,368, but that Waters’s 25 µm Oasis HPLC columns did not infringe either patent.

The appeals court’s decision, issued in October 2008, affirmed in part, reversed in part, and vacated in part the lower court’s ruling. The appeals court vacated the court’s decision that Cohesive was not entitled to lost profits and remanded the case to the lower court to decide if the 25 µm columns infringed, and to decide other issues related to whether Cohesive is entitled to lost profits. In January, Waters and Cohesive Technologies told the district court that, as a result of the appeals court’s ruling, they agree that three issues remain: the ‘874’s patent invalidity as it relates to “anticipation”; infringement by Waters’s 25 µm columns; and damages. The companies also disclosed that they are in settlement discussions. The court has scheduled a trial for September.

In February, the US District Court of Appeals for the Federal Circuit sent Enzo Biochem and Yale University’s 1998 patent infringement case against Applera (Applied Biosystems) (now Life Technologies) back to the US District Court for the District of Connecticut. In 2007, a jury found that the three Enzo patents under dispute were invalid (see IBO 9/15/07). Enzo appealed the case in order to compel a final judgment.

The appeals court agreed with Enzo and sent the case back to the district court, ruling that the lower court had not decided on Applera’s counterclaim of the invalidity of Enzo’s US Patent No. 4,711,955. As a result, earlier this year, Enzo granted an unrestricted covenant not to sue Applera for infringement of the ‘955 patent. As a result, the court declared the remaining counterclaims moot and closed the case. With the case officially closed, Enzo was free to formally appeal the decision, which it did last month.

Enzo’s 2002 action against Amersham (now GE Healthcare), Perkin Elmer, Molecular Probes (now Life Technologies) and Orchid Biosciences, alleging breach of contract and patent infringement, among other charges (see IBO 10/31/02), has been stayed, pending the appeals court’s decision. Likewise, cases brought by Affymetrix and Roche Diagnostics GmbH naming Enzo as the defendant have also been stayed.

Appeals has now been filed, following the decisions in Applied Biosystems’ patent infringement case against Solexa (now Illumina) (see IBO 1/31/09). Earlier this year, a jury found in favor of the defendants with respect to the ownership of the three patents under dispute. However, the jury ruled in favor of the plaintiff with respect to infringement. Last month, Illumina filed an appeal related to the claim construction. Several days later, Applied Biosystems appealed the denial of its motion of judgment as a matter of law and the decision that it is not the rightful owner of the patents.

Settlements and Dismissals

Invitrogen (now Life Technologies) and GE Healthcare have settled one of the two suits Invitrogen filed against GE last year. The suit alleged infringement of one patent by GE Healthcare’s GenomiPhi and TempliPhi kits (see IBO 7/15/08). Invitrogen informed the US District Court for the Eastern District of Texas on March 31 that the companies had reached a settlement.

Other cases involving Life Technologies were also recently dismissed or settled. In April, the US District Court for the Southern District of California granted Invitrogen’s motion to dismiss eBioscience’s suit against the company (see IBO 12/15/08) due to lack of subject-matter jurisdiction, on the grounds of a lack of case or controversy. And, earlier this year, Fluidigm voluntarily dismissed its suit against Applied Biosystems (see IBO 6/30/08). Corbett Life Science (now QIAGEN) dismissed its suit against Applied Biosystems after the companies entered into a settlement and licensing agreement (see IBO 7/15/08, 1/31/09).

Ongoing suits involving Life Technologies include patent infringement suits against GE Healthcare (see IBO 7/15/08), Oxford Biomedical Research and Vanderbilt University (see IBO 12/15/08), and Evident Technologies (see IBO 7/31/08). Invitrogen is also a defendant in Oxford Biomedical Research’s 2005 patent infringement case in the US District Court for the Eastern District of Michigan (see IBO 12/15/08). A May 12 trial date has been set for the case.

New Cases

In January, Bruker and Varian found themselves the defendants of an action brought by the Research Foundation of the State University of New York (SUNY). SUNY charges that the companies willfully infringed and induced infringement of its patent (see table, page 6). Also in January, Caliper Life Sciences filed suit against Shimadzu, alleging infringement of 11 patents by Shimadzu’s MCE-202 MultiNA Instrument system for microchip-based electrophoresis system (see table, page 6).

Earlier this month, in the US District Court for the Southern District of California, Scientific Plastic Products (SPP) filed suit against Biotage AB and Merck & Co., alleging infringement of three patents by Biotage’s SNAP cartridge flash chromatography products (see table, page 6). The complaint also charges Merck & Co. with infringement through use of the SNAP products, and charges that Biotage and Merck “worked together to obtain and copy the SPP patented flash chromatography products.”

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